Domain name transfer refused in parody website case

In Sutherland Institute v Continuative LLC (Case D2009-0693, July 10 2009), a World Intellectual Property Organization (WIPO) panellist has refused to find bad faith in the use on a parody site of a domain name that was identical to the service mark of a conservative think tank. 
 

The Sutherland Institute is a non-profit organization which describes itself as “a conservative public policy think tank committed to shaping Utah law and policy based on a core set of governing principles”. Sutherland was incorporated in 1994 in Utah and had no registered trademarks. In 1999 it established a website at 'sutherlandinstitute.org', which it has maintained ever since. It also claimed federal common law service mark rights in the words 'Sutherland Institute'. A Google search carried out by the panellist on the terms 'Sutherland Institute' returned 400,000 hits, the first five pages of which referred to Sutherland.

 

In February 2009, apparently after a public debate in which the president of Sutherland, Paul Mero, clashed with a member of the public called Nick West, Continuative LLC (whose administrative contact was West) set up a parody website at 'sutherlandinstitute.com'. The website had a green background instead of blue, but otherwise mirrored the look and feel of Sutherland's website, and replicated Sutherland’s service mark. Continuative included two disclaimers, one of which was a simple statement that it was not affiliated with, endorsed or sponsored by Sutherland, and the other which specifically stated that it was a parody.

 

Sutherland filed a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP), alleging that Continuative lacked rights or legitimate interests in the domain name 'sutherlandinstitute.com' in that it had not used the domain name for a good-faith offering of goods or services prior to notice of a dispute. Sutherland claimed that Continuative was not making legitimate non-commercial or fair use of the domain name without intent misleadingly to divert internet users or tarnish Sutherland’s trademark. Although Sutherland conceded that Continuative had the right to criticize Sutherland and its policies, it argued that it did not have the right to do so with a domain name and website which gave the impression that Continuative was Sutherland. Sutherland claimed that this intent to mislead distinguished its complaint from those under the UDRP which had allowed the use of third-party trademarks in identical domain names for the purpose of criticism.

 

Continuative did not file a response to Sutherland’s complaint.

 

The panellist concluded that Sutherland had established rights in the service mark SUTHERLAND INSTITUTE and that the disputed domain name was identical to the mark. He also concluded that Continuative had not made legitimate non-commercial use of the domain name because of the extent to which the domain name and its website were designed to induce internet user confusion.

 

However, Sutherland failed to convince the panellist of the bad faith in Continuative’s behaviour. In particular, the panellist found no evidence that Continuative had any intention of transferring the domain name to Sutherland, for gain or otherwise, nor that there was any pattern of Continuative registering third-party trademarks as domain names. While it had undoubtedly registered the domain name to confuse users as to the source, sponsorship, endorsement or affiliation of the website, there was no evidence that Continuative had done so for commercial gain. The panellist concluded that because this proceeding involved political speech, which was strongly protected in the US Constitution, the panel would not, in proceedings involving two US parties, attempt to identify bad-faith elements that were not specifically enumerated in the UDRP. He went on to state that if the right of political speech were to be interfered with based on the incorporation of Sutherland’s trademark in Continuative’s domain name, it was preferable that a federal or state court should make that application of the concept of bad faith. Accordingly, the panellist refused to order the transfer of the domain name.
 

Treatment of free speech and parody sites has been the subject of much discussion at WIPO, which sees a difference in the way in which US and non-US panellists have decided cases involving freedom of speech. This gives rise to questions about the extent to which the UDRP should be influenced by national laws. The panellist in the present case was clearly of the view that detailed issues under the US Constitution are beyond the scope of the UDRP.

 

Bratin Roy, McDermott Will & Emery UK LLP, London